WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LinkedIn Corporation v. Contact Privacy Inc. Customer 0144809947 / Adel Alawi, forum international
Case No. D2020-3408
1. The Parties
The Complainant is LinkedIn Corporation, United States of America, represented by Daudpota International, United Arab Emirates.
The Respondent is Contact Privacy Inc. Customer 0144809947, Canada / Adel Alawi, forum international, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <linkedintalents.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2020. On December 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 15, 2020, the Registrar transmitted by email to the Center its verification response confirming registrant and contact information for the Disputed Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 13, 2021. The Center received several email communications from the Respondent from December 24, 2020 to January 21, 2021, including a Response received on January 5, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 2, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, LinkedIn Corporation, is the operator of LinkedIn, a global online social media platform primarily used for professional networking and recruiting. The Complainant was established in 2003 and currently has over 675 million users around the world. The Complainant is a subsidiary of Microsoft Corporation and employs over 14,000 employees.
The Complainant is the holder of a multitude of trademark registrations across various jurisdictions throughout the world for the mark LINKEDIN, which it uses in connection with its social media and professional services. The Complainant’s trademark portfolio includes, inter alia, the following trademark registrations:
- LINKEDIN and design, international word mark registered in numerous jurisdictions under No. 1058794 on December 21, 2009 in classes 9, 35, 38, 41, 42 and 45;
- LINKEDIN, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 008411928 on March 16, 2010 in classes 9, 35, 38, 41, 42 and 45;
- LINKEDIN, word mark registered with the United States Patent and Trademark Office (“USPTO”) under No. 3963244 on May 17, 2011 in class 35;
These trademarks are referred to collectively as the “LINKEDIN” trademark in this decision.
The Disputed Domain Name was registered by the Respondent on June 13, 2016. The Complainant’s evidence shows that it has in the past been linked to a parking page which indicated the Disputed Domain Name is for sale at an estimated price of USD 200,000. It currently resolves to an automatically generated parking page containing various click through links. The Complainant has also placed in evidence social media pages created by the Respondent which refer to “Linked talent” (without the “in”) as a “professional networking site”. These pages replicate design elements (for example colour scheme and logo design) from the Complainant’s own webpages and social media sites.”
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is confusingly similar to the LINKEDIN trademark. The addition of the term “talents” does not serve to distinguish the Disputed Domain Name.
The Respondent has no rights or legitimate interests in the term “Linkedin”.
In consequence, the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. It says it is clear that Respondent intends to infringe the Complainant’s trademark rights and take illicit advantage of the goodwill associated with the mark LINKEDIN for its own commercial gain. It says the term “Linkedin” has no meaning except in relation to itself and the Respondent obviously chose the Disputed Domain Name to capitalize and take advantage of the Complainant’s very well known business and name.
The Complainant wrote a cease and desist letter to the Respondent but that was ignored.
The Panel considers it is convenient to set out in its entirety the communication filed with the Center by the Respondent. It reads as follows:
“This domain is registered since 2016 under our name, it does not copy or represent any other company name or any brand. No company or any representative have made any claim since 2016. So much money and efforts have been spent on promoting the website.
If the company who is making the claim or the dispute are interested in the domain, the domain is parked in www.sedo.com they can simply buy it if they are interested to obtain it.
Please also note since the launch of our website the following facts:
1. We have been promoting our website on most social media
2. We have built a database of many candidates from different part of the world
3. Spent money and efforts in building the site
4. We had a page group on LinkedIn site LinkedTalents | Groups | LinkedIn and it is active since 2009.
5. We also had a LinkedIn page but the LinkedIn company just removed it this week, the page was active since 2009
Given the above facts and figures we are the sole and preparty of this domain and we do not accept any claim from whoever. The name of our website dose not conflict with any other company trademark.
After all the work we have done to promote the business we expect to be compensated for all the money we have spent to promote the site. Given the current climate and the effect of the pandemic on the business now have out the website and the business for sale. So if anyone is interested they can approach me or the domain seller “www.sedo.com”.
I am also attaching screen shot from our Group page on LinkedIn that was created since 2009. It is very clear that LinkedIn was aware of our page and they never raised any complain since then.
Just to clarify more.
1. Forum International was established in 1997
2. We are a recruitment and Executive Search company based in Dubai and with offices in the Gulf and the Middle East region
3. Since the past 5 years most of our jobs that was posted on our websites were also shared on all social platforms, including LinkedIn
4. Since 2016 we never received any complain or objection from LinkedIn for our posts
5. Lately LinkedIn have been removing our employees profile on LinkedIn
6. LinkedIn are now worry that there will be another website competing with them for job posting
7. Without notice removing our employees profile from their platform, even as our employees had no
Linkedintalents name in their profile, just for a simple fact that they work in Forum International.
8. This a deliberate act of attacking a competition business for a simple fact that we are posing a threat on their business as more companies are now interested to advertise their jobs on our platform
9. LinkedIn consider us now as competition and continues to attack our business
We have no intentions to escalate this to the legal battel with them as we consider them as a partner than a competition. As explained earlier the domain is parked with www.sedo.com. If they are interested, they can buy it from there. If we do not sell it in one week time, we will be back online to support our business and ready to take the matter to the highest courts in Dubai.
Other facts about our website
Over 7 years we have achieved more than 70,000 followers in most the social media including linkedin, facebook instgram etc. This has not been achieved over night and it has taken more than seven years to achieve with hard work and money spent. During this period we never received any complain from anyone regarding our website.
In addition to all my previous emails, I must add here that we have invested in the business more than two million dollars in promotions and staff cost, plus all other expenditures that we have incurred for the past seven years.
I hope this will been taking in consideration to reach an amicable settlement.”
6. Discussion and Findings
6.1. Preliminary Matters
The Panel notes this is a case where one Respondent (“Contact Privacy Inc. Customer 0144809947”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case, the Panel considers the substantive Respondent to be Adel Al Alawi, and references to the Respondent are to that person. In reaching that conclusion the Panel notes the named Respondent in the Complaint is “Contact Privacy Inc./ Mr. Adel Al Alawi, Forum International Management Consultants DMCC” whilst the Registrant disclosed by the Registrar is “adel alawi, forum international” The Registrar indicated that the named Respondent in the Complaint and the Registrant for the Disputed Domain Name is NOT same. This would appear to be because of the inclusion (or not) of “Al” in the name. The Response received by the Center is from Adel Al Alawi with the same email address as the Registrar provided. The Panel concludes that Adel Al Alawi and Adel Alawi are the same person.
6.2. Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the LINKEDIN trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. The word “LINKEDIN” conjoins two ordinary English words: “linked” and “in” but results in a coined term with no meaning except in relation to the Complainant. The Disputed Domain Name involves the addition of the descriptive dictionary word “talents”. It seems inconceivable that the Respondent chose this name independently for use in relation to services similar to those the Complainant provides, and the Respondent has provided no explanation at all as to how or why it chose this name. The Panel thinks it is more likely than not that it was chosen to take advantage of the Complainant’s trademark.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive term (such as here “talents”), to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006‑0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000‑0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the LINKEDIN trademark is, on the evidence before the Panel, a term in which the Complainant has a significant reputation. It is clearly very famous and well known on a worldwide basis.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the LINKEDIN trademark. The Complainant has prior rights in the LINKEDIN trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Respondent’s supposed justification for his use of the Disputed Domain Name is that he operates his own networking business under that name. In substance he is saying that (i) above applies. He says that “it does not copy or represent any other company name or any brand”. The Panel disagrees – the Disputed Domain Name manifestly does copy the Complainant’s brand and the Panel concludes it does so as the result of a deliberate decision. It would seem that the Respondent operates a business which at least to some degree competes with that of the Complainant and in the view of the Panel he has adopted as the Disputed Domain Name a term which deliberately includes the Complainant’s extremely well know LINKEDIN trademark. That does not in the view of the Panel amount to a “bona fide” offering of goods or services. Were that not the case any use of a domain name incorporating another party’s trademark would be permissible if goods or services were provided - that clearly is not the intention of the Policy.
Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel is prepared to infer in the Respondent’s favour that he has carried out a genuine networking business of some kind, as indicated in the Response. In those present circumstances the Panel agrees with the Complainant that factor (iv) applies as the Respondent was seeking to attract customers to his networking business by adopting a name which was confusingly similar to the Complainant’s trademark. The Respondent has provided no explanation of how or why it chose the name “linkedintalents” and the Panel concludes that it was because of its similarity to the Complainant’s own trademark. That falls squarely within paragraph 4(b)(iv) of the Policy.
The Panel also notes that alternative grounds for findings of bad faith may exist based on (i) the evidence that the Respondent has at least at some stage offered the Disputed Domain Name for sale and the contents of the Response in effect invite the Complainant to purchase it; and (ii) its present usage by linking the Disputed Domain Name to a PPC website. However the Panel does not feel it necessary to consider these in any detail given its finding above.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <linkedintalents.com> be transferred to the Complainant.
Nick J. Gardner
Date: February 16, 2021